Ex Parte SzaboDownload PDFBoard of Patent Appeals and InterferencesOct 27, 201110985800 (B.P.A.I. Oct. 27, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/985,800 11/10/2004 Zoltan Szabo 02581-P0631A 8528 24126 7590 10/27/2011 ST. ONGE STEWARD JOHNSTON & REENS, LLC 986 BEDFORD STREET STAMFORD, CT 06905-5619 EXAMINER BACHMAN, LINDSEY MICHELE ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 10/27/2011 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ZOLTAN SZABO ____________________ Appeal 2009-015002 Application 10/985,800 Technology Center 3700 ____________________ Before: MICHAEL W. O'NEILL, FRED A. SILVERBERG, and WILLIAM V. SAINDON, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-015002 Application 10/985,800 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A grip arrangement for a medical instrument, which instrument has a handle with two substantially rod-shaped grip parts each with a grip surface, said grip arrangement comprising for each said grip part a rod-shaped grip shell which can be secured in a detachable manner on said respective grip part so that said respective grip shell is arranged on said respective grip surface of said respective grip part, each said grip shell having a grip surface which is of a larger size compared to said grip surface of said grip parts. References The Examiner relies upon the following prior art references: Slaughter Desimone Harrison Aebi Stone US 920,092 US 3,894,336 US 4,268,963 US 6,261,296 B1 US 6,533,797 B1 Apr. 27, 1909 Jul. 15, 1975 May 26, 1981 Jul. 17, 2001 Mar. 18, 2003 Rejections I. Claims 1, 2, 4-8, 10-13, and 19-21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Desimone and Harrison. II. Claims 1, 9, and 18 are rejected under § 103(a) as unpatentable over Slaughter and Harrison1. III. Claims 3 and 17 are rejected under § 103(a) as unpatentable over Desimone and Harrison. 1 The Examiner’s statement of rejection states this rejection is under 35 U.S.C. § 102(b). Ans. 5; Fin. Rej. 4. However, this is clearly a typographical error, as both the Examiner and Appellant treated this rejection as being under § 103(a). App. Br. 10. Appeal 2009-015002 Application 10/985,800 3 IV. Claim 14 is rejected under § 103(a) as unpatentable over Desimone, Harrison, and Stone. V. Claims 15-16 are rejected under § 103(a) as unpatentable over Desimone, Harrison, and Aebi. VI. Claim 22 is rejected under § 103(a) as unpatentable over Desimone, Harrison, and Aebi. SUMMARY OF DECISION We REVERSE. OPINION In each rejection, the Examiner proposes that it would have been obvious to substitute the rod grips of the pruner of Harrison for the finger loops in the scissors of Desimone and/or Slaughter, to make their scissors “easier to hold.” Ans. 4, 5. Appellant argues the rejections as a group. Appellant argues that the Examiner improperly concluded that it would have been obvious to modify the surgical scissors of Desimone (Rejections I and III-VI) or the configurable shears of Slaughter (Rejection II), both with detachable finger loops, to include the rod-shaped grips taught in Harrison. App. Br. 10. In particular, Appellant argues that the resulting combination would be “practically inoperable” for their intended uses because the scissors would “clearly lack the finger holes necessary for easy opening.” Id. Accordingly, the dispositive issue in this appeal is whether the Examiner properly found that the substitution of rod grips for finger loops would make the scissors “easier to hold.” In this case, the Examiner states that it would have been obvious to modify the shape of Desimone’s scissor grip “depending on what shape would make them easier to hold by the user.” Ans. 4. As evidence, the Appeal 2009-015002 Application 10/985,800 4 Examiner provides Harrison, and concludes that it would have been obvious to modify the finger-receiving handles of Desimone to have the rod-shaped handles of Harrison “depending on the application.” Id. The Examiner stresses that the cutting end of the scissors is unaffected by any modifications to the gripping end, such that the scissors still are “operable.” Ans. 9-10. We find that Desimone’s finger holes, by their nature, afford simple, one-handed operation because only two fingers are necessary to precisely and accurately hold and operate the device when cutting sutures and bandages. See also Desimone, abstr. (describing the scissors as useful for cutting surgical bandages, sutures, and the like). The Examiner offers no support for the finding that having two handles (rods), instead of finger holes, would make Desimone’s scissors “easier to hold by the user” based on its “application.” It is not apparent to us how removing the two finger holes makes the scissors easier to hold, especially in light of the precise and delicate nature of their use. Instead, it would seem to us that it would be more difficult to hold because the precise, simple, two-finger operation afforded by the holes would no longer be available (i.e., a different finger/hand hold would be required to open, close, and move the scissors), and, thus, we find it would make it more difficult to hold and make precise and accurate cuts as intended. Accordingly, the Examiner’s finding that the combination would make the scissors of Desimone easier to hold is conclusory and lacking a factual basis. Likewise, the Examiner offers no support for the finding that having two handles, instead of finger holes, would make Slaughter’s scissors “easier to hold by the user” based on its “application.” Similar to our finding above, removing the finger holes would make Slaughter’s scissors more difficult to Appeal 2009-015002 Application 10/985,800 5 hold because the holes are the structure that allows a user to hold the scissors with two fingers from one or the other hand. See, e.g., Slaughter, 1:17-24 (describing the scissors as changeable to accommodate the fingers of either hand). Accordingly, the Examiner’s finding that the combination would make the scissors of Slaughter easier to hold is conclusory and lacking a factual basis. Each of the Examiner’s rejections relies on a proposed combination of Desimone or Slaughter and Harrison, which we have found above to be lacking a sufficient factual basis. As such, each of the Examiner’s rejections is in error. See In re Warner, 379 F.2d 1011, 1016-17 (CCPA 1967) (The examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis). DECISION For the above reasons, we reverse the Examiner’s decision regarding claims 1-22. REVERSED hh Copy with citationCopy as parenthetical citation